GlobalRx, Inc. v. Hope Mills Universal
c/o Brad Mitchell
Claim
Number: FA0504000462918
Complainant is GlobalRx, Inc. (“Complainant”), represented
by Daniel T. Tower, 4700 Six Forks Rd., Suite 150,
Raleigh, NC 27609. Respondent is Hope Mills Universal c/o Brad Mitchell (“Respondent”), P.O. Box 3152 Road Town, Tortola,
British Virgin Islands, BVI, US Virgin Islands 00000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <globalrxdirect.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 18, 2005.
On
April 13, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <globalrxdirect.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
April 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@globalrxdirect.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <globalrxdirect.com>
domain name is confusingly similar to Complainant’s GLOBALRX mark.
2. Respondent does not have any rights or legitimate
interests in the <globalrxdirect.com> domain name.
3. Respondent registered and used the <globalrxdirect.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
an international online and mail order pharmacy. Complainant uses the GLOBALRX trademark in connection with its
mail order and Internet services featuring prescription and over-the-counter
pharmaceuticals.
Complainant
registered the GLOBALRX mark with the U.S. Patent and Trademark Office on June
18, 2002 for the above services (Reg. No. 2,582,089). In addition, Complainant registered the GLOBALRX mark with the
United Kingdom Patent and Trademark Office on May 1, 2001 (Reg. No. 2232286).
On October 16,
2003, Respondent registered the <globalrxdirect.com> domain
name. Respondent uses the domain name
to resolve to a website that sells pharmaceutical goods and services.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established a presumption of rights in the GLOBALRX mark as the result of its
registration of the mark with the U.S. and U.K. trademark authorities. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see
also Am. Online, Inc. v. Thomas P.
Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark).
The <globalrxdirect.com> domain name incorporates Complainant’s
GLOBALRX mark in its entirety and has simply added the word “direct.” It is established under the Policy that
merely adding the term “direct” to a third-party mark does not distinguish the
domain name from the mark pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb.
Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly
similar to Complainant’s registered mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22,
2000) (finding that adding the generic term “direct” on to Complainant’s marks
(GE CAPTIAL and GECAL) does not alter the underlying mark held by Complainant,
and thus Respondent’s domain names are confusingly similar).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks
rights and legitimate interests in the disputed domain name. In the absence of a response, the Panel
accepts all reasonable allegations set forth in the Complaint as true, unless
clearly contradicted by the evidence.
See Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21,
2000) (finding that failing to respond allows a presumption that Complainant's
allegations are true unless clearly contradicted by the evidence); see also Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, Inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true).
Respondent’s failure to respond to the
Complaint functions as an implicit admission that Respondent lacks rights and
legitimate interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Under the
Policy, it is established that it is neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use pursuant to Policy
¶¶ 4(c)(i) and (iii) for a registrant to register and use a domain name that is
identical or confusingly similar to a competitor’s mark. Respondent is using the <globalrxdirect.com>
domain name to sell online pharmaceutical products. Complainant uses the GLOBALRX mark to sell prescription and
over-the-counter pharmaceuticals.
Therefore, the Panel concludes that Respondent and Complainant are
competitors. Based on that competitive
relationship, Respondent has no right or legitimate interest to use a
competitor’s trademark to sell its products under Policy ¶¶ 4(c)(i) and
(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests in a
domain name that utilized Complainant’s mark for its competing website).
The record,
including the WHOIS registration information, fails to indicate that Respondent
is commonly known by “globalrxdirect” pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
As stated prior,
Respondent and Complainant are competitors.
Nonetheless, Respondent registered a domain name that incorporates
Complainant’s federally registered GLOBALRX mark. In the absence of a response, the reasonable conclusion to be
drawn from this fact is that Respondent is attempting to siphon Complainant’s
potential customers to its own website.
The primary purpose and effect of such activity is to disrupt the
business of Complainant, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
In conjunction
with the foregoing, Respondent has evidenced its intention of attempting to
attract Internet users to its own website for commercial gain by creating a
likelihood of confusion with Complainant’s GLOBALRX mark, which is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA
196119 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent is using the domain name at issue in direct competition
with Complainant, and giving the impression of being affiliated with or
sponsored by Complainant, this circumstance qualifies as bad faith registration
and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's
mark with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”).
Complainant has
established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the Panel
concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <globalrxdirect.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
May 25, 2005
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